Trade Marking Celebrity Image: The Impact of Distinctiveness and use as a Trade Mark

Abstract

Celebrity trade marks do not generally indicate origin or quality, two traditional functions of a trade mark. The commercial reality of registered celebrity trade marked merchandise is that often it is the trade mark itself that is being bought and sold. Once famous, celebrity marks may not ‘distinguish’ the product as required for registration under the Trade Marks Act. If registration occurs, infringement limitations may still arise due to the specific nature of celebrity image marks. In Australia, guidelines exist but a binding precedent that establishes a specific test for infringement of a celebrity image mark does not. It is clear, however, that a registered mark will only provide limited control to the celebrity or trade mark owner, as a celebrity’s image may still be used on products simply for its innate appeal, not ‘as a trade mark’. The United Kingdom and United States, where infringing use need not strictly be ‘use as a trade mark’, offer broader protection in this regard.